Appeal 2007-1161
Application 09/954,166
the soluble MHC to a immunoglobulin scaffold would have prompted one of
ordinary skill in the art to have applied the same approach to TCR in order to
improve its binding affinity.3
Appellants dismiss this rationale, arguing that that Matsui “solves the
problem” (Br. 14). However, as they acknowledge (Br. 14), Matsui did not
remedy the low affinity of heterodimeric TCRs; they worked around it by
utilizing a technique that facilitated the measurement of low-affinity TCR
binding (Matsui, p. 12862, col. 2; Findings of Fact 6). Precise teachings
directed to the specific subject matter of a claim are not required to reach a
conclusion of obviousness. KSR, 127 S. Ct. at 1741, 82 USPQ2d at 1396.
“[T]he teaching, motivation, or suggestion may be implicit from the prior art
as a whole, rather than expressly stated in the references. . . . The test for an
implicit showing is what the combined teachings, knowledge of one of
ordinary skill in the art, and the nature of the problem to be solved as a
whole would have suggested to those of ordinary skill in the art.” In re
Kahn, 441 F.3d 977, 987-988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). In
this case, the TCR binding problem identified in Matsui, and acknowledged
in the Specification, would have led one of ordinary skill in the art to have
applied Dal Porto’s teachings to solve it.
Appellants argue that Harris teaches away from complete antibodies
because “the effector functions intrinsic to the complete antibodies . . . have
led to undesirable interactions” (Harris, p. 1-2; Br. 11-12). We do not find
3 Consistent with the Examiner’s reasoning that there was motivation to
improve the affinity of soluble TCR for peptide/MHC complexes,
Appellants state in the Specification that “to specifically regulate immune
responses, soluble molecules with high affinities/avidities for . . .
peptide/MHC complexes are needed” (Specification 7-8).
12
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